Ex Parte Verbrugge et al

Board of Patent Appeals and Interferences

Apr 20, 2009

11059878 (B.P.A.I. Apr. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARK W. VERBRUGGE,
PATRICK B. USORO and ANTHONY L. SMITH

____________________

Appeal 2009-1657
Application 11/059,878
Technology Center 3700
____________________

Decided: April 20, 2009
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Before: LINDA E. HORNER, STEVEN D.A. MCCARTHY and
MICHAEL W. O'NEILL, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-1657
Application 11/059,878

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection claims 1-6
and 8-11. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). The claims are
directed to a powertrain having a magnetorheological fluid (“MRF”) clutch.
Claims 1 and 6 are illustrative of the claimed subject matter and is
reproduced below:

1. A powertrain comprising:
an engine;
a multi-speed transmission connected to a final drive;
a selectively engageable magnetorheological fluid clutch
drivingly connected between said engine and said multi-speed
transmission; and
a motor/generator operatively connected to said engine
and said magnetorheological fluid clutch for selectively
exchanging power with said engine and/or said
magnetorheological fluid clutch, such that said motor/generator
may be used to start said engine, to drive said multi-speed
transmission via said magnetorheological fluid clutch, and to
receive energy from said magnetorheological fluid clutch for
regenerative braking.

6. A powertrain comprising:
an engine;
an energy conversion system;
a selectively engageable magnetorheological fluid clutch
operatively connected to said engine;
a motor/generator operable to start said engine and in
driving engagement with an output side of said selectively
engageable magnetorheological fluid clutch; and
a multi-speed transmission in driving engagement with
said output side of said magnetorheological fluid clutch;
wherein said motor/generator is operatively connected to said
engine by engagement of said magnetorheological fluid clutch,
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and wherein engagement of said clutch is required in order to
use said motor/generator to start said engine.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

Bansbach US 5,779,013 Jul. 14, 1998
Evans US 6,208,036 B1 Mar. 27, 2001
Bowen US 6,464,608 B2 Oct. 15, 2002

The Examiner rejected claims 1-6, 10 and 11 under 35 U.S.C.
§ 103(a) as being unpatentable over Evans and Bansbach. Ans. 3. The
Examiner rejected claims 8 and 9 under 35 U.S.C. § 103(a) as being
unpatentable over Evans, Bansbach and Bowen. Ans. 3-4.

ISSUES
Appellants contend that the Examiner erred by rejecting independent
claim 1 because it would not have been obvious to incorporate the clutch of
Bansbach into the powertrain of Evans in the manner suggested by the
Examiner. App. Br. 5. Reply Br. 5-6. Appellants further contend that even if
such combination were effected, the limitations of claim 1 would not be met
because the motor would not selectively exchange power with the clutch or
receive energy from the clutch for regenerative braking. App. Br. 6. Claims
2, 3, and 5 have not been separately argued (see App. Br. 6) and will
therefore stand or fall with parent claim 1. 37 C.F.R. § 41.37(c)(1)(vii)
(2008). Appellants contend that the Examiner erred by rejecting independent
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Application 11/059,878

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claim 11 for the same reasons Appellants contend that the Examiner erred by
rejecting claim 1.
The issues before us are:
Have Appellants established that the Examiner erred in determining
that one having ordinary skill in the art would have been led to incorporate
the clutch of Bansbach into the powertrain of Evans in the manner claimed?
Have Appellants established that even if Bansbach were combined
with Evans, the limitations of claims 1 and 11 would still not be met because
there would not be a selective exchange of power between the motor and
clutch or receipt of energy from the clutch for regenerative braking?
Appellants additionally contend that the Examiner erred by rejecting
claim 4, which depends from claim 1, because the proposed combination
would not teach or suggest the motor/generator operatively connected to the
engine by engagement of the MRF clutch. Br. 6. Appellants set forth a
similar argument regarding claim 6, namely that the proposed combination
would not teach or suggest the motor/generator in driving engagement with
an output side of the MRF clutch. App. Br. 7. Claims 8-10 have not been
separately argued (see App. Br. 7) and will therefore stand or fall with parent
claim 6. 37 C.F.R.
§ 41.37(c)(1)(vii).
Another issue before us is:
Have Appellants established that the Examiner erred by concluding
that the combination of Evans and Bansbach would have led one of ordinary
skill in the art to locate the engine and motor/generator on opposing sides of
the MRF clutch?
Appeal 2009-1657
Application 11/059,878

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FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427, 7 USPQ2d 1152, 1156 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. Evans discloses a powertrain 10 comprising an engine 12 and a multi-
speed transmission 16 connected to a final drive 18 (col. 2, ll. 14-16).
2. Evans discloses that conventional input clutches (not shown), are
connected between the transmission input shaft 36 and the transmission
16 (col. 2, ll. 26-28) and are thus drivingly connected between the engine
12 and the multi-speed transmission 16.
3. Evans further discloses that a motor/generator 14 is operatively
connected to the engine 12 (engine crankshaft 34 is connected with motor
rotor 48 via hub 52; col. 2, l. 67 – col. 3, l. 2) and the input clutch (motor
rotor 48 is connected to crankshaft 34, which is connected to torque
converter 20, which is connected to transmission input shaft 36, which is
connected to the input clutch (not shown); col. 2, ll. 20-28).
4. Evans discloses that the motor/generator 14 is capable of exchanging
power with the engine since it may be used as a generator, thereby
receiving power from the engine (col. 3, ll. 21-22) and it may also be
used to start the engine, thereby providing power to the engine (col. 3, ll.
23-24).
5. Evans also discloses that the motor/generator 14 is capable of providing
power to the input clutch (in order to provide or add power for driving
the vehicle) (col. 3, ll. 23-28) to drive the transmission 16 via the input
clutch.
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6. Evans additionally discloses the motor/generator 14 is operatively
connected to a controller/drive unit 54 and an energy storage device 56.
Col. 3, ll. 20-22.
7. Evans does not specifically state whether the motor/generator is capable
of receiving energy from the input clutch for regenerative braking. Evans
is aware, however, that a hybrid powertrain such as the disclosed hybrid
powertrain 10 is suitable for use with a regenerative braking system. See
col. 1, ll. 20-24.
8. Evans does not disclose that the input clutch is a MRF clutch.
9. Evans does not disclose that the motor/generator operable to start the
engine is in driving engagement with an output side of the clutch wherein
engagement of the clutch is required in order to use the motor/generator
to start the engine.
10. Bansbach discloses a magnetorheological fluid torque transfer device
having an input and an output shaft (col. 2, ll. 56-65; Figs. 2 and 3).
11. Bansbach teaches that the MRF torque transfer device may be used as a
MRF clutch 354 that connects a torque supply 358, such as an engine, to
the input of a transmission 366. Col. 6, l. 66 – col. 7, l. 5; Fig. 6.
12. Bansbach further teaches that the use of a MRF torque transfer device
provides the beneficial result of eliminating moving parts and reducing
cost. Col. 5, ll. 45-51.
13. Bansbach also teaches that, unlike a conventional clutch, using a MRF
clutch provides the benefit of allowing the transmission to be engaged
using purely electrical actuation (col. 7, ll. 11-14) and provides the
additional benefit of being capable of dampening gear rattle during prime
rattle conditions (col. 7, ll. 30-33).
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PRINCIPLES OF LAW
A patent applicant is free to recite features of an apparatus either
structurally or functionally. See In re Swinehart, 439 F.2d 210, 212 (CCPA
1971) (“[T]here is nothing intrinsically wrong with [defining something by
what it does rather than what it is] in drafting patent claims.”). Yet,
choosing to define an element functionally, i.e., by what it does, carries with
it a risk. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). As stated in
Swinehart:
where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
439 F.2d at 213.
While features of an apparatus may be recited either structurally or
functionally, claims directed to an apparatus must be distinguished from the
prior art in terms of structure rather than function. See e.g., In re Schreiber,
128 F.3d at 1477-78.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
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ANALYSIS
The rejection of claims 1-3, 5 and 11 as being unpatentable over Evans and
Bansbach is affirmed
Evans discloses the basic structure of claims 1 and 11 (Facts 1-6).
Evans, however, does not specifically state whether the motor/generator is
capable of receiving energy from the input clutch for regenerative braking
(Fact 7). Additionally, Evans does not disclose that the input clutch is a
MRF clutch (Fact 8). Evans teaches that it was known in the art to use
regenerative braking systems with hybrid powertrains (Fact 7). Bansbach
teaches that it was known to interpose an MRF clutch between an engine and
transmission (Fact 101).
Appellants argue that it would not have been obvious to one having
ordinary skill in the art to replace the torque converter clutch 46, or the
entire torque converter 20 of Evans with the MRF clutch of Bansbach. App.
Br. 5; Reply Br. 5-6. At least two clutches are located between the engine 12
and transmission 16 of the Evans powertrain, namely, the torque converter
(or “lock-up”) clutch 46 and the conventional transmission input clutches
(mentioned at col. 2, ll. 27-28 but not shown in the figure). The Examiner
suggests that the teachings of Bansbach may be applied to the powertrain of
Evans by substituting the torque converter clutch 46 of Evans with the MRF
clutch of Bansbach (Ans. 3). The clutch that Bansbach suggests replacing
with an MRF clutch however, is more akin to the input clutches of the
transmission of Evans. In any case, the thrust of the rejection remains the
same: Hybrid powertrains were known in the art (Facts 1-6) and it was
known in the art to provide an MRF clutch in place of a conventional clutch
between the engine and the transmission in a powertrain (Facts 10-13). Thus,
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providing a selectively engageable MRF clutch drivingly connected between
an engine and transmission, as recited in claims 1 and 11, amounts to
applying a known technique to improve a known device in order to yield the
predictable result of enabling the selective transmission of torque using
purely electrical actuation (See Fact 13) and therefore the claimed invention
would have been obvious to one having ordinary skill in the art. Whether the
Evans torque converter is modified, replaced, or remains unchanged is a
detail of construction that may be worked out by the skilled artisan when
combining the teachings of Bansbach and Evans. Combining the teachings
of references does not necessarily require the combination of their specific
structures. See In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). One of
ordinary skill in the art would know how to implement the MRF clutch of
Bansbach into the powertrain of Evans in order to arrive at a functioning
apparatus. “[A] person of ordinary skill is also a person of ordinary
creativity, not an automaton.” KSR v. Teleflex, 550 U.S. 398, 421 (2007).
Appellants argue that the combination of Evans and Bansbach “does
not teach a ‘selective exchange of power’ between the torque converter
clutch 46 and the motor/generator because “exchanging” power requires the
motor/generator to not only provide power to the clutch (Fact 1), but also
receive power from it, such as by regenerative braking. App. Br. 6; Reply
Br. 7. These limitations, upon which Appellants rely to distinguish over
Evans and Bansbach, are functional in nature. Thus, the combination of
Evans and Bansbach need not disclose that the motor actually exchanges
power with, or receives energy from, the clutch but that the proposed
combination would be capable of performing such functions. Ans. 5; See
e.g., In re Schreiber, 128 F.3d at 1477-78. The fact that Evans does not
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specifically state that the motor/generator is capable of receiving energy
from the input clutch for regenerative braking fails to prove that it lacks this
capability. Indeed, Evans is aware that hybrid powertrains are often used in
conjunction with regenerative braking systems (Fact 7). Thus, even if the
motor disclosed by Evans were not capable of receiving power from the
clutch, Evans clearly suggests that it would have been obvious to provide
this capability because in order for the motor/generator to regenerate energy
from braking it must be capable of receiving power in the form of kinetic
energy back from the driven components (e.g., 16, 18) on the opposite side
of the clutch. Ans. 5.

Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection of claim 4 under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which applicant regards as the invention.
Claim 1 recites a powertrain having an engine and a motor/generator
on the same side of a magnetorheological clutch opposite from a multi-speed
transmission (e.g., as represented by the solid lines in Fig. 1). Claim 4,
however, which depends from claim 1 and therefore includes all the
limitations thereof, requires the motor/generator to also be located on the
opposite side of the magnetorheological clutch from the engine (e.g., as
represented by the broken lines in Fig. 1). The Specification discloses that
the arrangement of claim 4 is an alternative to the arrangement of claim 1,
not an addition thereto. See Spec. para. [0009] and [0023]. Thus, it is unclear
how the motor/generator can simultaneously occupy two distinct locations as
required by claim 4.
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The rejection of claim 4 is vacated.
For the above reasons, claim 4 is indefinite. Therefore, the prior art
rejection of claim 4 is vacated because it is necessarily based on a
speculative assumption as to the meaning of the claim. See In re Steele, 305
F.2d 859, 862-63 (CCPA 1962).

The rejections of claims 6 and 8-10 are reversed.
Independent claim 6 is directed to the alternate embodiment in which
the motor/generator is operatively connected to the engine by engagement of
the magnetorheological fluid clutch and wherein engagement of the clutch is
required to use the motor/generator to start the engine. The motor/generator
of Evans is directly coupled to the engine (Fact 3) and both are on the input
side of the clutch. Thus the motor/generator operable to start the engine is
not in driving engagement with the output side of the clutch nor is
engagement of the clutch required in order to use the motor/generator to start
the engine (Fact 9). Neither Evans nor Bansbach teach or suggest
rearranging the powertrain to place the motor/generator on the output side of
the clutch along with the transmission. In addressing claim 6, the Examiner
does not offer any explanation for the lack of such a feature in Evans and
Bansbach. Ans. 6. For these reasons the rejection of claim 6 and its
dependent claim 10 as being unpatentable over Evans and Bansbach cannot
be sustained.
The Examiner relies on Bowen in the rejection of claims 8 and 9 to
teach the use of a fuel cell and does not allege that the teachings of Bowen
cure the deficiencies noted supra in the combination of Evans and Bansbach.
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Therefore the rejection of claims 8 and 9 as being unpatentable over Evans,
Bansbach, and Bowen also cannot be sustained.

CONCLUSIONS OF LAW
On the record before us, Appellants have not established that the
Examiner erred in determining that one having ordinary skill in the art
would have been led to incorporate the clutch of Bansbach into the
powertrain of Evans in the manner claimed. Appellants have also failed to
establish that the combination of Bansbach and Evans would not have
suggested the subject matter of claims 1 and 11. Appellants have established
that the Examiner erred by concluding that the combination of Evans and
Bansbach would have led one of ordinary skill in the art to locate the engine
and motor/generator on opposing sides of the MRF clutch, as recited in
claims 6 and 8-10.

DECISION
For the above reasons, the rejection of claims 1-3, 5 and 11 under
35 U.S.C. § 103(a) as being unpatentable over Evans and Bansbach is
affirmed; the rejection of claims 6 and 10 under 35 U.S.C. § 103(a) as being
unpatentable over Evans and Bansbach is reversed; the rejection of claims 8
and 9 under 35 U.S.C. § 103(a) as being unpatentable over Evans, Bansbach
and Bowen is reversed; the rejection of claim 4 under 35 U.S.C. § 103(a) as
being unpatentable over Evans and Bansbach is vacated; and we enter a new
ground of rejection of claim 4 under 35 U.S.C. § 112, second paragraph.
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Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner's rejections of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION1, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
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If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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1 The date of the decision is the decided date shown on the first page of the
decision. The date of the decision is not the Mail Date (paper delivery) or
Notification Date (electronic delivery).